P. Venkatachalam, a Business Concern in Condiments, by Mr. C. Pattabhirama Aiyangar, One of the Joint Receivers of the Said Business and anr. Vs. Rajagopal Naidu and anr. - Court Judgment

LegalCrystal Citation

legalcrystal.com/778036

Subject

Intellectual Property Rights

Court

Chennai

Decided On

Mar-02-1932

Reported in

AIR1932Mad705; (1932)63MLJ568

Appellant

P. Venkatachalam, a Business Concern in Condiments, by Mr. C. Pattabhirama Aiyangar, One of the Join

Respondent

Rajagopal Naidu and anr.

Cases Referred

Ltd. v. Maxton and Murray

Excerpt:.....it must be observed, there is an action pending against a firm called colinson & co. , found that the passing off complained of, if done, was not done by the defendants in madras but by their agents in england and that the passing off, the passers off and the evidence were all in england. from his judgment it seems that he has found that the passers off in england were the agents of the defendants and also that the defendants did not give their agents any authority to sell the curry powder got up in the manner complained of by the plaintiffs. 2. i do not propose to say anything with regard to the question of jurisdiction or the findings with regard to the agency or the want of authority in the agents because it seems tome quite clear that this case must fail upon another point. in..........to restrain the defendants from selling the curry powder manufactured by them called the 'madras curry powder' in packages designed and labelled so as to resemble those of the plaintiffs. the 2nd defendant in the suit is the minor son of the late p. section loganatham, a grandson of the original p. venkatachalam, who died about a year ago. it is conceded that the defendants did not sell or offer for sale any of their curry powder in madras. the acts complained of were committed in england where, it must be observed, there is an action pending against a firm called colinson & co. claiming the same reliefs as here and for the same alleged reasons. waller, j., did not decide the case on the merits but held on the admitted facts that he had no jurisdiction to try the suit. that point was.....

Judgment:

Horace Owen Compton Beasley, Kt., C.J.

1. The suit under appeal was brought by the receivers of P. Venkatachalam's condiment business to restrain the defendants from selling the curry powder manufactured by them called the 'Madras Curry Powder' in packages designed and labelled so as to resemble those of the plaintiffs. The 2nd defendant in the suit is the minor son of the late P. Section Loganatham, a grandson of the original P. Venkatachalam, who died about a year ago. It is conceded that the defendants did not sell or offer for sale any of their curry powder in Madras. The acts complained of were committed in England where, it must be observed, there is an action pending against a firm called Colinson & Co. claiming the same reliefs as here and for the same alleged reasons. Waller, J., did not decide the case on the merits but held on the admitted facts that he had no jurisdiction to try the suit. That point was not raised in the written statement nor was there any issue taken upon it. Waller, J., found that the passing off complained of, if done, was not done by the defendants in Madras but by their agents in England and that the passing off, the passers off and the evidence were all in England. He accordingly dismissed the suit with costs. From his judgment it seems that he has found that the passers off in England were the agents of the defendants and also that the defendants did not give their agents any authority to sell the curry powder got up in the manner complained of by the plaintiffs.

2. I do not propose to say anything with regard to the question of jurisdiction or the findings with regard to the agency or the want of authority in the agents because it seems tome quite clear that this case must fail upon another point. It is sufficient to say with regard to jurisdiction that, whilst it is true that a Court can issue an injunction against persons within its jurisdiction restraining them from doing acts outside the jurisdiction, it will not do so unless that remedy is likely to be an effective one. In this case it is argued by the respondents that, as the defendants have no property here, the remedy could not be an effective one. Upon this point it is not necessary to give an opinion. In my view, the appellants' case fails because the evidence falls far short of proving that they had in England the exclusive right to sell the 'Madras Curry Powder'. It may well be that the 'Madras Curry Powder' manufactured by them had obtained considerable reputation in England. But it does not follow, therefore, that other manufacturers of Madra's curry powder had not obtained for themselves a similar reputation. What is claimed by the appellants is that they have acquired a right to the exclusive use of the name 'Madras Curry Powder' with regard to the goods manufactured in their business. That is what is claimed in the plaint and that is the first issue framed; and that the appellants must succeed in proving before the question of the passing off can be considered. It was strenuously contended on behalf of the appellants that all the Court had to consider was the question of the alleged passing off. That is not so because the first issue must, first of all, be found in favour of the plaintiffs. In S. Chivers & Sons v. S. Chivers & Co., Ltd (1900) 17 R.P.C. 420 Farwell, J., as he then was, stated that there were two questions which had to be answered, viz., whether the plaintiffs had established that 'Chivers' Jellies' or 'Chivers' Table Jellies' had acquired a secondary meaning and had come to mean jellies made by the plaintiffs and whether the defendants had so described their jellies as to be likely to mislead the purchaser into believing that the jellies were the jellies of the plaintiffs. These questions Farwell, J., took from the questions left to the jury by Collins, L.J., in Reddaway v. Bankam (1896) A.C. 199 : 13 R.P.C. 218. The plaintiffs in that case sought to restrain the defendants from selling Chivers' Table Jellies, a description ' under which the plaintiffs sold jellies manufactured by themselves. The plaintiffs' suit failed. Farwell, J., in discussing the evidence refers particularly to the evidence of two witnesses. One of them said:

If a customer asked me for Chivers' jellies I should sell what I had in stock; if I had both I should ask him which he required.

The other witness said:

If asked for Chivers' jellies I should give the defendants'; if I had both, I should ask which was wanted.

3. I refer to this evidence because of the answers given by the plaintiffs' first witness in this case whose evidence I will deal with later on. On the authority of this case, it is necessary for the appellants to prove that the Madras curry powder which is merely descriptive of the kind of powder and the place of its manufacture has acquired a secondary meaning and has come to mean curry powder manufactured by themselves and not by other manufacturers. Another case upon this point is Havana Cigar Tobacco Factories, Ltd. v. Oddenino (1924) 1 Ch.179 For many years the brand name 'La Corona' or 'Corona' had been used by the plaintiffs and their predecessors. It was not disputed that when used as a brand those words indicated cigars of the plaintiffs' manufacture. Many years before, the plaintiffs introduced a new size name 'Coronas'. Cigars of the Corona brand and Coronas, or Corona size were known as 'La Corona Coronas' or 'Corona Coronas'. This size name was adopted by other manufacturers and had for many years been used as a size name. The defendant in complying with a request for 'some Cigars - Coronas' supplied cigars of the Partagas brand and Coronas size. The defendant claimed the right in response to a request for a 'Corona Cigar' or any similar request so phrased as not to indicate whether the word 'Corona' was used to refer to brand or to size, to supply a cigar of any brand provided it was of the Corona size. In an action brought by the plaintiffs claiming an injunction to restrain the defendant from selling, or supplying, or offering or exposing for sale, or passing off, or inducing or enabling others to pass off, cigars not of the plaintiffs' manufacture as or for the plaintiffs' 'La Corona' brand of cigars by the use of any words consisting of or containing the word 'Corona' as a brand name, and from selling or supplying, in response to' orders for 'Corona' cigars, cigars not of the plaintiff s' manufacture, it was held that the words 'a Corona cigar' being on the evidence proved to be ambiguous in meaning, the defendant, if he exercised the right which he claimed, would, in the majority of cases of a request for 'a Corona cigar,' be passing off goods not manufactured by the plaintiffs as goods of their manufacture. It was argued on behalf of the defendant in the action, who was the appellant in the Court of Appeal, that the respondents, the plaintiffs, had to prove that the word 'Corona' in the trade denoted exclusively goods of their manufacture. At page 195 Warrington, L.J., says:

As to the authorities I have little to say, for, as I have already stated, they are not directly in point. In Reddaway v. Banham (1896) A.C. 199 and in Cellular Clothing Co. v. Maxton and Murray (1899) A.C. 326 : 15 R.P.C. 581 the question was whether a name originally descriptive had obtained a secondary meaning as denoting exclusively the plaintiffs' goods. This question does not arise in the present case, for it is not disputed that the word 'Corona' used as a brand name denotes exclusively the plaintiffs' goods.

I take it to be clear from the evidence that, long antecedently to the operations of the respondent, the word ' Glenfield' had acquired a secondary signification or meaning in connection with a particular manufacture - in short, it had become the trade denomination of the starch made by the appellants.

5. In Powell v. The Birmingham Vinegar Brewery Co. (1896) 2 Ch. 54 the plaintiffs had manufactured for years and sold under the name of 'Yorkshire Relish' a sauce made according to a secret recipe. The term 'Yorkshire Relish' had come to mean that particular manufacture. I quote this case merely in order to show that that element had to be present. North Cheshire and Manchester Brewery Co. v. Manchester Brewery Co.(1899) A.C. 83 Massam v. Thorley's Cattle Food Co.(1880) 14 Ch. D. 748 and Reddaway v. Banham (1896) A.C. 199 may also be referred to. In the latter case belting made of camel hair yarn had been known in the markets of the world for many years. It had been sold under a variety of names. But there was ample evidence to justify the finding that amongst those who were the purchasers of such goods the words 'camel hair' were not applied to belting made of that material in general and that, in short, it did not mean in the market belting made of a particular material but belting made by a particular manufacturer. In Cellular Clothing Co., Ltd. v. Maxton and Murray (1899) A.C. 326 : 15 R.P.C. 581 Lord Shand in the course of his judgment speaking of the Reddaway's case says as follows:

Of that case I shall only say, that it no doubt shows it is possible where a descriptive name has been used to prove that so general, I should rather say so universal, has been the use of it as to give it a secondary meaning and so to confer on the person who has so used it a right to its exclusive use or, at all events to such a use that others employing it must qualify their use by some distinguishing characteristic. But I confess I have always thought, and I still think, that it should be made almost impossible for any one to obtain the exclusive right to the use of a word or term which is in ordinary use in our language and which is descriptive only - and, indeed, were it not for the decision in Reddaway's case, I should say this should be made altogether impossible.

6. Even in cases where the plaintiff is able to prove that in a certain locality his goods have been sold under a particular name and it could therefore be held that in that particular place by its universal use the word has acquired a secondary signification, Lord Shand in the before-mentioned case is of the opinion that that would not entitle the plaintiff to have an injunction in every part of the country. These cases are sufficient to show that in order to succeed in the suit the appellants must at least succeed on the first issue.

7. I will now proceed to examine the oral evidence in this case which is very brief. P.W. 1 is one of the joint receivers appointed by this Court of the condiment business of the late P. Venkatachalam. Whilst in England he purchased a number of packets of the 'Madras Curry Powder,' the object being of course to ascertain whether some other manufacturer or manufacturers were selling curry powder so described in England. At the time of making the purchases he asked for the 'Madras Curry Powder' and from some dealers he obtained the appellants' curry powder and from others that manufactured by the respondents. He produced a number of such packages containing curry powder in Court. He first of all stated that of his own knowledge the curry powder manufactured by the appellants was known in England as Venk's powder or Venkat's powder or the 'Madras Curry Powder' and that when the name of the 'Madras Curry Powder' was mentioned it was understood to be the powder manufactured by the appellants. The criticism with regard to this evidence is that it is purely hearsay evidence. Neither is it the evidence of a person engaged in the trade, such as a retail dealer, nor can it be said that the witness is possessed of any expert knowledge about the matter. In his examination-in-chief, the following questions and answers appear:

Q. - When you asked for Madras Curry Powder, what were you given? A - Either this or that.

Q. - Can you explain how it came about that when you asked for Madras Curry Powder they gave either?

A. - Probably because it carried the name of Madras Curry Powder or because it has some connection with Venkatachalam.

8. In cross-examination there are the following questions and answers:

Q. - Likewise you went to retail shops and asked for one of this sort: and one of the other sort?

A. - In the retail shops I asked for Madras Curry Powder. It is only from Selfidge that I asked that, so that the Court might know about it.

Q. - What did you ask for in retail shops?

A. - I simply asked for Madras Curry Powder. Then either this one or that one was offered.

Q. - They treated both alike as having had a reputation as Madras Curry Powder?

A. - I do not know whether they treated both as having the same reputation.

Q. - In response to your asking for the Madras Curry Powder the shopman gave you one of this and one of that and asked you to choose?

A. - They will give this or that.

Q. - And you bought both?

A. - In some places both and in some places only defendants' powder.

9. These answers seem to me to completely destroy the appellants' case. It seems to me that it is impossible for the appellants to claim that in England 'Madras Curry Powder' has come to be understood as the curry powder exclusively manufactured by the appellants. The other witnesses really carry the case no further. There is no evidence here of any retail dealers to support the plaintiffs' case. No doubt it would be expensive and inconvenient to get such evidence, but if it existed, it could and should have been got. It may be that in the litigation in England the plaintiffs can get such evidence and prove that the 'Madras Curry Powder' manufactured by them has come to be regarded in England as exclusively their manufacture. If the plaintiffs do that, then the Court will proceed to consider the question of passing off. On the evidence, in my view, the appellants' case must fail. Therefore, on the merits, this appeal must be dismissed with costs. The Receivers may pay the costs and take their own costs out of the estate.